FORM TM-O

THE TRADEMARKS ACT, 1999

(Counter statement for Application No.2762128 for Registration of Trademark)

[Sections 21(2) of the Trademarks Act, 1999, Rules 44 of the Trademark Rules, 2017]
_________________________________________________________________________________________________________

IN THE MATTER of the mark

“SPASMONOVA” bearing
Application No.2762128 in class 5 in
the name of MACLEDOS
PHARMACEUTICALS LTD having place
of business 304,ATLANTA ARCADE,
NEAR LEELA HOTEL, MAROL
CHURCH ROAD, OFF.ANDHERI KURLA
ROAD, ANDHERI (EAST) MUMBAI 400059.

SPASMONOVA V. NOVA

MACLEDOS PHARMACEUTICALS LTD having registered office at 304,ATLANTA ARCADE,

NEAR LEELA HOTEL, MAROL ,CHURCH ROAD, OFF.ANDHERI KURLA ROAD, ANDHERI
(EAST) MUMBAI- 400059, hereby making a response to the opposition of the mark
‘‘SPASMONOVA’’ (hereinafter referred to as “Applicant’s Mark)

The Applicant before proceeding to the grounds of opposition submits as follows:

1. That the Applicant is the honest and bonafide user of the mark and had adopted the
mark “SPASMONOVA” without any prejudice being created to the rights and interest of the
opponent.

2. That the Applicant has been using the mark since 2014 and is engaged in the
manufacturing, selling and distribution of the drugs in India and abroad.

3. That there is no phonetic similarity between the opponent’s mark “NOVA” and the
Applicant’s mark “SPASMONOVA” and both marks are entirely different and the chances of
likelihood of confusion between both marks does not arise.

4. It is a well settled judicial principle that marks are to be compared in its entirety and
not by dissecting and comparing the individual elements of the mark.

Replies to the Grounds of opposition are follows:

1. Para 1 is a matter of record.

2. It is specifically and vehemently denied that the opponent’s mark have been
conceived and adopted the mark in the year 1935 for use upon and in relation to the said
products and the same is being used openly, exclusively, continuously and extensively since
then. The opponent’s mark enjoys the goodwill and reputation in the market is to be
decided by the examiner after considering the records and evidences of the case.

3. It is a matter of record.

4. It is specifically and vehemently denied that trademark in respect of the said

products is being used extensively, continuously and exclusively by the opponent. The
opponent is put to strict proof in regard to the averments made in this paragraph.

5. It is specifically and vehemently denied that the trademark is a well know trademark
and recognized by the relevant sections of the public, inter alia, by virtue of sales and
promotion of the said trademark, and by virtue of advertising and promotional efforts. The
opponent is put to strict proof with regard to the averments made in the paragraph.

6. It is specifically and vehemently that the opponent has a right to use the mark to the
exclusion of others and have statutory and common law rights to prevent registration
and /use of any mark which is identical/similar to my said mark. The Applicant is not
trading upon the goodwill and reputation of the opponent’s mark, there is no phonetic
similarity between the applicant’s mark and opponent’s mark.

7. In response to Para 7, the applicant admits the averments made in this Paragraph.

8. It is specifically and vehemently denied that the Applicant’s mark is deceptively

similar and identical to the opponent’s registered mark. The Applicant is a honest and
bonafide user of the mark ‘SPASMONOVA’ and the Applicant has not added the prefix
“SPASM” but it’s a complete mark in itself and there are no chances of deception or
confusion being caused amongst the general public. The Hon’ble Delhi High Court has in
the case of Mankind Pharma Ltd Vs. Chandra Mani Tiwari and Anr held that “ to constitute
infringement under Section 29(5), it is required to have the same or identical trade name and
merely having a similar or deceptively similar trademark to the registered trademark
would not constitute infringement.' The Court has observed that
mere affixation of the name of theDefendant No.2 as manufacturer or marketeer of the drug
s/medicines sold by the Defendants would notqualify as a use thereof as a trade mark even
under Section 29(6) of the Act.'

The Applicant’ Mark is not prohibited from registration under S. 9(2) (a) of the Act. The
Hon’ble Supreme court in Amritdhara Pharmacy v Satya Dev Gupta has laid down tests
to determine the likelihood of deception and confusion as follows:

a. A trade mark is likely to deceive or cause confusion by its resemblance to another

mark if it is likely to do so in the course of its legitimate use in a market the two
marks are assumed to be in use by traders in that market. In considering the matter,
all the circumstances of the case must be considered.

b. For deceptive resemblance two important questions are: (1) who are the persons
whom the resemblance must be likely to deceive or confusion, and (2) what rules of
comparison are to be adopted in judging whether such resemblance exists. As to
confusion it is perhaps an appropriate description of the state of mind of a customer,
who, on seeing the mark, thinks that it differ from the mark on goods which he had
previously bought, but is doubtful whether that impression is not due to imperfect
recollection.

c. The question has to be approached from the point of view of a man of average
intelligence and imperfect recollection who would be deceived by the overall
similarity of the two names having regard to the nature of the medicine he is looking
 for with a somewhat vague recollection that he had purchased a similar medicine on
a previous occasion with a similar name. He would consider the word as a whole
without splitting the name into its component parts and not going to its
etymological meaning.

The Applicant’s trademark is registrable under 9(1)(a) as the mark “SPASMONOVA” has
acquired distinctiveness through continuous and extensive use, sales, promotion and
advertising. Moreover, the Applicant’s mark and the opponent’s mark even though falls
under the same class, the drugs manufactured under these have different usage and
purpose. SPASMONOVA Tablet is a combination of three medicines: Paracetamol /
Acetaminophen, Pamabrom and Dicyclomine. Paracetamol is an analgesic (pain reliever)
which works by blocking the release of certain chemical messengers that causes pain.
Pamabrom is a diuretic which increases urine production to remove excess water from the
body and relieve premenstrual symptoms like bloating, water-weight gain, swelling and the
feeling of being full. Dicyclomine is an anti-cholinergic which relaxes the muscles in the
stomach and gut (intestine) and stops sudden muscle contractions (spasms) whereas
Nova Tablet is an anti-epileptic medicine used for the treatment of certain types of
seizures. It is also used to relieve pain associated with nerve damage caused by conditions
such as diabetes, certain viral diseases, and fibromyalgia. Moreover, both mark produce
drugs having different usage for different kind of diseases and different combination of
drugs with different medicinal properties.

9. It is specifically denied that the Applicant has explicitly copied the opponent’s
trademark. The Applicant has not made cosmetic changes to the trademark of the
Opponent’s mark but the Applicant is a honest and bonafide adopter of the mark and has
been using since 2014. The Applicant’s mark and the opponent’s mark are under the class
but the goods manufactured are different with different combination of medicines having
different purposes. It is Submitted that the Applicant’s trademark is registrable under
s.11(1) as the Applicant’s mark is entirely different from the opponent’s mark “NOVA” and
there is no likelihood of confusion on account deceptive similarity or the mark being in
identical. It is well settled judicial principle that the marks are to be compared as whole and
not by dissecting the individual elements on the trademark. The Applicant is a honest and
bonafide adopter of the mark “SPASMONOVA and therefore, entitled for registration of the
mark.

10. It is denied that there is likelihood of confusion and deception among the general
public regarding the goods under both the marks. The Hon’ble supreme court has in
Amritdhara Pharmacy v Satya Dev Gupta (supra) , that the deception and confusion is to
be considered from the point of view of person with average intelligence and imperfect
recollection. The Applicant is using the mark “SPASMONOVA” since 2014 and has created a
market through extensive sales and advertising. The Trademark of the Applicant is entitled
for registration as the Applicant is not passing off and moreover, the opponent is entitled
for registration as the opponent’s trademark is registered trademark.

11. It is specifically and vehemently denied that the Applicant has mala fide intention or
the registration of the trademark is sought in bad faith. The Applicant is a honest and
bonafide user of the mark and has been using the mark since 2014. The Applicant is
entitled for registration of the mark and the same is not prohibited under s 11(10) of the
Trademarks Act, 1999. The Applicant’s mark is not deceptive similar or identical with that
of the opponent’s mark and therefore, the Applicant mark is entitled for registration.

12. It is denied that the Applicant is taking undue benefits or advantages of the
opponent’s mark and is trading upon the goodwill and reputation of the opponent’s mark.
The Applicant is entitled to registration of the mark under s.12 of the Trademarks act, 1999
as being a honest and bonafide user of the trademark “SPASMONOVA”.

13. The Applicant can claim the proprietor of the mark used or proposed to be used and
the fact that the Applicant is a honest and bonafide adopter of the mark and has been using
it since 2014, the Applicant is entitled for registration under the Act. S.18

14. The Applicant’s mark is entitled for registration under the Act as the Applicant’s
mark and the opponent’s mark are different in its entirety and there is no likelihood of
confusion being created in the general public and members of the trade. Moreover, it is a
well settled judicial principle that marks are to be compared as whole and not by dissecting
the individual elements of the mark. The Hon’ble Supreme Court also laid down some
factors for deciding the question of deceptive similarity. However, it suggested that
weightage to be given to each of these factors should depend upon the facts and
circumstances of each case.

The factors are enumerated below:

a) The nature of the marks i.e. whether the marks are word marks or label marks or
composite marks, i.e. both words and label works.

b) The degree of resemblances between the marks, phonetically similar and hence similar
in idea.

c) The nature of the goods in respect of which they are used as trademarks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require,
on their education and intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods; and

g) Any other surrounding circumstances which may be relevant in the extent of

dissimilarity between the competing marks.

Therefore, in terms of the guidelines by the Hon’ble Supreme Court, the marks are to
compared as a whole and not by comparing individual elements of the mark. The Applicant
is entitled for registration of the mark “SPASMONOVA” under the Trademarks Act, 1999.

15. The Applicant vehemently denies that the mark is not registrable under the act and
the submissions regarding the provisions mentioned in the opposition have been dealt with
in detail. The Applicant mark “SPASMONOVA” is not contrary to the provisions 9(1)(a), 9(2)
(a), 11(1), 11(2), 11(3)(a), 11(10), 12, 18(1) and 18(4) of the Act.
16. In view of the Submissions made in the foregoing paragraphs, the Applicant
respectfully submits that the mark of the Applicant may proceeded further for registration
under the Act.

17. The Applicant craves for the Hon’ble Registrar to add, amend and alter the
submissions.

Prayer:

It is therefore, most respectfully prayed that:

A. The Notice of Opposition be dismissed;

B. The Registration of the mark “SPASMONOVA” under Application No.2762128 be

allowed for further processing

C. Cost of the proceedings in favour of Applicant and against the Opponent.

D. Any other order/direction as the Ld. Registrar may deem fit and proper.